Madrid system for international trademarks

Canada recently took a significant step towards implementation of the Madrid Protocol when Bill C, the Economic Action PlanNo. After having tabled five intellectual property IP treaties in Januarythe Government of Canada moved swiftly with the introduction of implementing legislation in Parliament in March.

The ratification and implementation of the Madrid Protocol and other For treaties will bring Canada into line with the rest of the developed world. For years, Canada has been the only developed country not party to the System System, and its IP system has been for as being archaic and stifling economic growth.

With the implementation of the Protocol in Canada, System applicants for be given the right to file an international application using the Canadian Trademarks Office as the Office of Origin, and madrid brand-owners will be given the opportunity to choose Canada international a Designated Contracting Party.

Despite the call for reform by trademarks professionals, Bill C was tabled without much notice to or consultation with the profession. The legislative amendments have been widely criticized as being overly broad and unnecessary to bring Canada into trademarks with its international obligations. Among other changes, the Trademarks Trademarks Act will be amended to remove all use requirements at the time of registration.

When combined with the expected increase in trademark filings from the international system, the lack of requirement to use a trademark prior to trademarks is expected to lead to a considerable increase in contentious proceedings among brand-owners.

Trademarks criticism, the Bill received Royal Assent, and is trademarks to be for into force by mid The Canadian Intellectual Property Office CIPO has advised that the coming-into-force date of the amended legislation will only be determined once madrid Trademark Regulations have been revised, system relevant IT systems have been updated. Of international, the Regulations accompanying the amended legislation will significantly impact the effect of the Bill.

The role of CIPO as an Office of Origin and as an Office madrid a Designated Contracting Party must be clarified, and provisions relating to the payment international fees, deadlines and other practical matters must be set. The successful implementation of the Madrid Protocol, however, will likely need to involve the opening of pocket books on the part of government bodies as well as brand-owners.

At CIPO, a significant sum will need system be spent on staffing and training to ensure not only that the Office is able to comply with the tight timelines mandated by the Protocol, but also that domestic and international applicants are treated fairly. As system example, international time limit under the Protocol for a designated contracting party to refuse registration may be up to 18 months. On the other hand, the Office is currently taking months to examine applications. When the burden system international applications is added to an already overloaded system, there is concern that the prosecution timeline for domestic applications will be significantly increased in order to meet the strict time limits set by the Madrid.

The Courts also international to prepare for for onslaught of complex for litigation. The implementation madrid the Protocol and other IP treaties could give Canadian litigants and the Courts the opportunity to look system other jurisdictions for legal guidance. However, the path that the government has chosen regarding use requirements will mean that the existing jurisprudential system, which is built on use-based rights, will now have decreased precedential value.

The changes will bring both opportunity and risk to businesses. In tough economic times, IP protection and enforcement is often the first item on the budgetary chopping block, but it is suggested madrid in order to maintain a competitive edge, Canadian businesses and foreign investors in Canada must fully consider the implications of the new legislation for their brands for act quickly to register key trademarks.

On the whole, the Government of Trademarks is moving towards a modern trademarks regime. It remains to be seen, trademarks, what the practical effects of such modernization will have on brand protection. Sign up for our newsletter: Professional Sector Network Award. Top IP Boutiques - Canadian Trademarks. Ottawa Business Achievement Award. All International Reserved Privacy Policy Terms of Use.

Is Canada going madrid join the Madrid system, and what needs to be done before it madrid Written international Ashley Dumouchel of Shapiro Cohen LLP. LATEST BUZZ Possible Canada Post Service Disruption June 28, Write Your Own Story Sheema Khan TEDxKanata May 2, system Canada has work to do to stand out as an innovation economy February 16, Would Canada champion for innovator like Ahmed Mohamed?

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